Appeal No. 2001-1193
Application No. 08/463,761
evidence that supports enablement1 against evidence that the
specification is not enabling.
Thus, the dispositive issue is whether the Appellants'
disclosure, considering the level of ordinary skill in the
art as of the date of Appellants' application, would have
enabled a person of such skill to make and use the
Appellants' invention without undue experimentation. The
threshold step in resolving this issue as set forth supra is
to determine whether the Examiner has met his burden of
proof by advancing acceptable reasoning consistent with
enablement. This the Examiner has not done.
In an effort to establish a prima facie case for lack of
enablement for the claims on appeal, the Examiner asserts
(answer at page 4 and 5):
Eigler et al in Nature 4/90 shows a line of xenon
atoms on a nickel surface, and states in the last
paragraph “We anticipate that there will be a
limiting class of adsorbed atoms and molecules that
may be positioned by this method”. In other words,
it would be nice to be able to position any atom
1 The appellant may attempt to overcome the examiner's doubt
about enablement by pointing to details in the disclosure but may
not add new matter. The appellant may also submit factual
affidavits under 37 CFR § 1.132 or cite references to show what
one skilled in the art knew at the time of filing the
application.
5
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